Appeal 2006-1068
Reissue Application 08/425,766
reasonably be expected to have described the insubstantial substitute
in question. In those cases the patentee can overcome the
presumption that prosecution history estoppel bars a finding of
equivalence (emphasis added).
***
When the patentee has chosen to narrow a claim, courts may presume
the amended text was composed with awareness of this rule and that
the territory surrendered is not an equivalent of the territory claimed.
In those instances, however, the patentee still might rebut the
presumption that estoppel bars a claim of equivalence. The patentee
must show that at the time of the amendment one skilled in the art
could not reasonably be expected to have drafted a claim that would
have literally encompassed the alleged equivalent (emphasis added).
The same policy considerations that prevent a patentee from urging
equivalents within what the Supreme Court refers to as “surrendered territory”
should prima facie prohibit the patentee from being able to claim subject matter
within the surrendered territory in reissue. Accordingly, the “surrendered subject
matter” that may not be recaptured through reissue should be presumed to include
subject matter broader than the patent claims in a manner directly related to (1)
limitations added to the claims by amendment (either by amending an existing
claim or canceling a claim and replacing it with a new claim with that limitation) to
overcome a patentability rejection and (2) limitations argued to overcome a
patentability rejection without amendment of a claim. These presumptions are
believed to place practical and workable burdens on examiners and applicants.
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